What are the Basics of Trademark Litigation?

M. Lupica

The public policy behind trademark protection is to protect consumers from confusing the source of goods that they purchase. In order to execute successful trademark litigation, the plaintiff must first establish ownership of a trademark that is protected under law. Next, the plaintiff must show that the defendant is using a trademark in a way that is so similar to the plaintiff’s trademark that there is a likelihood of confusion to potential consumers. If these two elements can be established, then the plaintiff will prevail in trademark litigation.

Part of an application to register a trademark.
Part of an application to register a trademark.

Generally, trademarks can be registered with a trademark office. If they are registered with a trademark office, then they are protected under law. Even if the trademark is not registered with a trademark office, it might still be protected under law as long as the plaintiff can show that the trademark was used in commerce. In the event that the trademark can be shown to have been used in commerce but has not been registered, then the trademark will be protected in trademark litigation in the geographic area in which it has been used prior to the alleged infringement.

Typically, the court will look at several factors in determining if there is likely to be confusion from the use of the allegedly infringing trademark. The main factors are the similarities between the goods involved and the similarity of the trademarks. Also considered heavily is the strength of the trademark, meaning the likelihood of the trademark to be recognized by the average consumer. The court likely will also look at evidence of actual confusion, the similarity of the marketing channels used and the defendant’s intent to infringe upon the existing trademark.

The remedy for a plaintiff who conducts successful trademark litigation is most commonly simply an injunction that prevents the defendant from using the infringing trademark in commerce. The court might also award the plaintiff any damages, such as lost profits, as they are determined by the court. In some cases where the infringement was found to be intentional, the court might order the defendant to pay the plaintiff’s reasonable attorney’s fees. Also, if it is determined to be necessary, the court might order the destruction of any good or marketing material that bears the infringing logo.

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